On 11 June 2020, the Court of Justice of the EU issued a preliminary ruling concerning C-833/18 - Brompton Bicycle v. Chedech/Get2Get, where it provided that copyright protection may also subsist in designs which are shaped to attain a particular technical result provided certain conditions are met. In other words, the CJEU allowed the overlap of copyright and patent protection in specific cases.
In this case, the CJEU considered the protection of utility articles concerning a design for a folding wheel. Coined 'Brompton bicycle', the facts of this case focus on a foldable bicycle which has the distinctive feature of being able to assume three different positions (a folded position, an unfolded position, and a stand-by position enabling the bicycle to stay balanced on the ground). SI have been marketing this bicycle model since 1987 and the design was protected by a patent.
Get2Get also marketed a very similar folding bike which could also assume three different positions. During an infringement action brought by SI in Belgium, SI and Brompton claimed copyright protection as the initial patent had expired.
Get2Get contended that because the bicycle was designed to fulfil a functional purpose, it was not subject to copyright protection but rather, patent protection. In retaliation, Brompton asserted that the three different folding positions could be obtained using differing designs, and hence, was protected by copyright. The Enterprise Court of Liège suspended proceedings and referred questions to the CJEU for a preliminary ruling.
In its judgement of 8 March 2018 (C-395/16 – DOCERAM), the CJEU interpreted Art. 8(1) of Regulation No. 6/2002 to mean that in assessing whether the appearance of a product is dictated exclusively by its technical function, one must determine whether this function is the sole factor determining that characteristic. Should features be chosen solely based on a technical consideration then these would not be protected by design law.
The following summarises the CJEU's rationale and decision:
- The CJEU found that copyright protection should extend to products whose shape is required to obtain a technical result. This is only where the author expresses his creativity independently through free and creative decisions.
- The CJEU also reiterated that the term 'work' encapsulates original creations which must be expressed, although the latter point was not dealt with in this judgement. By 'original', one means that the object should reflect the author's free and creative choice.
- If such a choice is restricted by technical considerations, then it will not be deemed as original. A product should not be limited by its technical function as this would hinder the expression of creative capacity.
- Hence, the decision of the CJEU clarifies that it is possible to rely on copyright protection for a product which was – but is no longer – protected by a patent, given the appropriate circumstances.
This decision is intriguing as the length of protection awarded to copyright greatly exceeds that reserved for patents. This means that should the correct circumstances be present, protective rights vested in an author may be indirectly strengthened.
Based on the CJEU's considerations, the Belgian Court is yet to decide on whether the Brompton Bicycle is an original work protected by copyright.
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